AIA
Status of claim Set 2
Claims 1-12 examined. Filed 10/22/2023.
New 10-12
Amended 1 9
Canceled 3
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CLAIM INTERPRETATION
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Generic placeholders, e.g., module (claim 1-12) invoke 112f.
Claim Rejections - 35 USC § 101
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The Claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1
The claims and their dependents are directed to one of the statutory classes (1 10 process 9 machine). (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2a Prong 1
The claim(s) is/are directed to CERTAIN METHODS OF ORGANIZING HUMAN BEHAVIOR.
Independent claims 1, 9 10 similar
18375667
EPG
CLAIM 1
1. A method for COLLECTING data from a receipt produced by an [electronic cash register] at a point of sale, comprising the steps of:
O (i) AUTHORIZING, via the [electronic cash register] at, a payment from a customer;
O (ii) GENERATING, via the [electronic cash register], a receipt for the payment;
O (iii) PREPARING, via a print service, [ a print job file for a printer and sending said print job file to a printer driver ]
O (iv) EXECUTING, via an [ electronic cash register utility module ] in the [electronic cash register] to read the print job file;
O (v) INTERPRETING, via the [electronic cash register] at utility [ module ], the content of the print job file and extracting receipt data; and
O (vi) SENDING, via the [ electronic cash register utility module ] , said receipt data to a remote [ server ]
further comprising the step of
O MONITORING, via the [ electronic cash register utility module ] module, a print service directory to detect new job files, and performing steps (iv) to (vi) when a new job file is detected
Collecting info,
analyzing it,
displaying certain results.
Bold = abstract idea
Additional element beyond the idea [ generic limitation generally applied ]
Alice
clearinghouse
implemented by computer
Here
Organizing human behavior - generate receipt
implemented by computer
Bilski
hedge
implemented by computer
Thus, the claims is “recite” an abstract idea (i.e. “PEG” Revised Step 2A Prong 1=Yes).
Additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to: bracketed above. Other steps do not present significantly more or integrate the idea into a practical application.
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Dependent claims generally add merely
Collecting information, analyzing it, displaying certain results of collecting/analyzing (Electric Power Group V Alstom (CAFC 2016)).
Dependent claims
CLAIM 2
2. The method of claim 1, further comprising:
O sending, via the printer driver, the job file or a modified job file to the printer; and
O printing, via the printer, a paper receipt.
Examiner
Idea itself, survey to including collecting info, analyzing it, displaying certain results using generic additional elements.
CLAIM 3 CANCELED
3. The method of claim 1, further comprising:
monitoring periodically, via the electronic cash register utility module, a print service directory to
detect new job files.
Examiner
Idea itself, survey to including collecting info, analyzing it, displaying certain results using generic additional elements.
CLAIM 4
4. The method of claim 1, further comprising:
O converting, via the electronic cash register utility module, images in said print job file into text.
Examiner
Idea itself, survey to including collecting info, analyzing it, displaying certain results using generic additional elements plus the idea of converting printed matter from one data type to another.
CLAIM 5
5. The method of claim 1, further comprising:
O extracting, via the electronic cash register utility module, text or numerical data portions from said print job file, and
O assign them to data fields.
Examiner
Idea itself, survey to including collecting info, analyzing it, displaying certain results using generic additional elements.
CLAIM 6
6. The method of claim 1, further comprising the steps of:
O scanning a wallet pass of said customer; and
O associating said receipt data with said wallet pass.
Dependent on rejected claim
CLAIM 7
7. The method of claim 6, wherein said
O receipt data is associated with said wallet pass by said ECR utility module.
Dependent on rejected claim
CLAIM 8
8. The method of claim 6, wherein said
O receipt data is associated with said wallet pass by said remote server.
Dependent on rejected claim
CLAIM 11
The method of claim 10, wherein said additional information delivered to customers is additional information available at said remote server
Examiner
Idea itself
CLAIM 12
The method of claim 10, wherein said additional information delivered to customers is selected from the group consisting of customer information, merchant information, and purchased product information
Examiner
Idea itself
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are directed to an abstract idea with additional generic computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The claims in ordered combination are just the abstract idea implemented on a computer, the ordered combination spelling out how to do computer implement. The specification has the computer as any machine that performs the functions (Applicant’s Spec). The additional elements are not sufficient to amount to significantly more than the judicial exception. The claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke. Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
Prong 1 answered “YES”, the next question in Prong 2 is whether there is an integrated practical application. This judicial exception is not integrated into a practical application. In particular, the claim recites additional element – bracketed above to perform the claim steps. The elements are recited at a high-level of generality (e.g. generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, general linking of idea to generic element. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea.
Step 2b
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something unconventional such that Applicant has improved computer functionality. Applicant presents an abstract idea for which computers are invoked merely as a tool.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The further elements of the claims are merely directed to further abstract ideas (a plurality of exceptions December 16, 2014 Interim Guidance p 74625, Fed Register Vol 79 No 241) and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is conventional (device, ad inventory, computer program product, medium). There is not improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
The claim limitations alone or in ordered combination do not improve upon the technical field to which the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of any device itself.
The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are generic activities previously known to the industry. Moreover, these generic limitations do not lead to an integrated practical application because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to an integrated practical application. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
Moreover, mere recitation of a machine or medium in the preamble does not make a claim statutory under 35 U.S.C. 101, as seen in the Board of Patent Appeals Informative Opinion Ex Parte Langemyr (Appeal 2008-1495). Moreover, mere mention of a piece of a computer or processing device does not confer patentability. Alice Corporation Pty. Ltd. v CLS Bank International ("Alice Corp") 573 US __ (2014). Incorporating the two-step test espoused in its recent decision in Mayo v. Prometheus 566 U.S. ___ (2012), the Court describes a first inquiry as to whether the claims at issue are directed to a patent-ineligible concept. If so, the Court requires a second inquiry as to whether the elements, individually or in combination, “transform” the nature of the claims into a patent-eligible invention. The Court described this second step as a search for an inventive concept, “i.e., an element or combination sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something to improved hardware functionality.
The further elements of the claims are merely directed to further abstract ideas and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is generic. There is no improvement in these items, but rather they are invoked as a tool to solve a business problem (targeted marketing), not a technical problem.
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of calculating a number using generic technology
In addition to these indisputably generic features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces a result that overrides the generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be generic in any computer implementation. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, storage do something nongeneric such that Applicant has improved computer functionality. Applicant presents an idea for which computers are invoked as a tool.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342 121 USPQ2d at 1947-48. Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
-Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48
-Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of an algorithm for organizing human behavior implemented with generic technology. In addition to these indisputably conventional features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces “a result that overrides the routine and conventional” use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly conventional” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
Claims dependent from the independent claims do not cure the deficiencies and are rejected.
Response to Remarks
Applicant amendment remarks fully considered but unfortunately not fully persuasive.
DP rejection withdrawn due to filing of TD
103 withdrawn
101 the claims unfortunately are directed to an abstract idea that’s computer implemented with generic elements generally applied.
112 withdrawn due to amendment
Conclusion
Pertinent prior art cited but not relied upon
Prospect Theory by George Wu Wiley Encyclopedia Of Operations Research 2011
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention The claim places the public on notice of the scope of the patentee’s right to exclude See, eg, Johnson & Johnston Assoc Inc v RE Serv Co, 285 F3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed Cir 2002) (en banc) As stated in Halliburton Energy Servs, Inc v M-I LLC, 514 F3d 1244, 1255, 85 USPQ2d 1654, 1663 (CAFC 2008):
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/ Primary Examiner, Art Unit 3621